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Filing of Notice of Arbitration Awards [R-11.2013]

35 U.S.C. 294
Voluntary arbitration.

(a) A contract involving a patent or any right under a patent may
contain a provision requiring arbitration of any dispute relating to patent
validity or infringement arising under the contract. In the absence of such
a provision, the parties to an existing patent validity or infringement
dispute may agree in writing to settle such dispute by arbitration. Any such
provision or agreement shall be valid, irrevocable, and enforceable, except
for any grounds that exist at law or in equity for revocation of a
contract.

(b) Arbitration of such disputes, awards by arbitrators, and
confirmation of awards shall be governed by title 9, to the extent such
title is not inconsistent with this section. In any such arbitration
proceeding, the defenses provided for under section
282 shall be considered by the arbitrator if raised
by any party to the proceeding.

(c) An award by an arbitrator shall be final and binding between
the parties to the arbitration but shall have no force or effect on any
other person. The parties to an arbitration may agree that in the event a
patent which is the subject matter of an award is subsequently determined to
be invalid or unenforceable in a judgment rendered by a court of competent
jurisdiction from which no appeal can or has been taken, such award may be
modified by any court of competent jurisdiction upon application by any
party to the arbitration. Any such modification shall govern the rights and
obligations between such parties from the date of such modification.

(d) When an award is made by an arbitrator, the patentee, his
assignee or licensee shall give notice thereof in writing to the Director.
There shall be a separate notice prepared for each patent involved in such
proceeding. Such notice shall set forth the names and addresses of the
parties, the name of the inventor, and the name of the patent owner, shall
designate the number of the patent, and shall contain a copy of the award.
If an award is modified by a court, the party requesting such modification
shall give notice of such modification to the Director. The Director shall,
upon receipt of either notice, enter the same in the record of the
prosecution of such patent. If the required notice is not filed with the
Director, any party to the proceeding may provide such notice to the
Director.

(e) The award shall be unenforceable until the notice required by
subsection (d) is received by the Director.

37 CFR 1.335 Filing of notice of arbitration awards.

(a) Written notice of any award by an arbitrator pursuant to
35 U.S.C. 294 must be filed in the Patent and
Trademark Office by the patentee, or the patentee’s assignee or licensee. If
the award involves more than one patent a separate notice must be filed for
placement in the file of each patent. The notice must set forth the patent
number, the names of the inventor and patent owner, and the names and
addresses of the parties to the arbitration. The notice must also include a
copy of the award.

(b) If an award by an arbitrator pursuant to 35 U.S.C.
294 is modified by a court, the party requesting the
modification must file in the Patent and Trademark Office, a notice of the
modification for placement in the file of each patent to which the
modification applies. The notice must set forth the patent number, the names
of the inventor and patent owner, and the names and addresses of the parties
to the arbitration. The notice must also include a copy of the court’s order
modifying the award.

(c) Any award by an arbitrator pursuant to 35 U.S.C.
294 shall be unenforceable until any notices required
by paragraph (a) or (b) of this section are filed in the Patent and
Trademark Office. If any required notice is not filed by the party
designated in paragraph (a) or (b) of this section, any party to the
arbitration proceeding may file such a notice.

The written notices required by this section should be directed to the
attention of the Office of the Solicitor. The Office of the Solicitor will be
responsible for processing such notices.